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BGH Decision: I ZR 109/06 “Partner Programme” of October 7, 2009

The Federal Court of Justice in Germany (BGH) delivered a decision dealing with the liability of a merchant for its affiliate in connection with an advertising partner programme.

1. If the input of a search term into a search engine leads to a term in the result list which the addressed trade circles believe is used as a trademark, this demonstration of facts is sufficient to meet the proprietor's burden of adducing evidence for his claim that the owner of the indicated website uses the respective term as a trademark. If the owner of the website on which the respective term is used asserts that he uses this term in a descriptive manner only, he has to prove the relevant, concrete circumstances to meet his burden of adducing evidence.

2. If a company maintains an advertising partner programme in which its advertising partners provide links to the website of that company, these advertising partners have to be seen as assignees of that company under § 14 paragraph 7 of the German Trademark Act, if the following conditions are met:

a) the advertising partners are paid a commission for every visitor of the company's website who enters this website via the respective link and who concludes a business deal with that company;

b) the advertising partners were given a selection of advertising possibilities;

c) the respective advertising partner becomes part of the advertising partner programme after being checked by the company.

Facts:

The plaintiff was the owner of the word/figurative trademark “ROSE", registered for, among others for bicycles, their individual parts, and bicycle accessories. The plaintiff offered his goods on his website http://www.roseversand.de. Another company, a bicycle discount company, also offered bicycles and bicycle accessories on their website http://www.raddiscount.de. To increase access numbers for their website, this bicycle discount company joined an affiliate programme operated by affilinet GmbH (limited liability company). According to that programme, contracts were concluded between mail order companies and other companies, based on which third companies placed banner ads on their websites with links leading to the website of the bicycle discount company. A company which was registered as a mail order company and which used the meta tag “rose” consequently used a foreign mark/sign. The company “Rose-Versand” considered this use to be an infringement of its trademark rights and requested the bicycle discount company to cease and desist using the mark/sign “rose”.

The Federal Court of Justice first decided that the use of the term “ROSE”, by a merchant has to be considered as use as a trademark. Furthermore, the Federal Court of Justice had to answer the decisive question of whether the merchant was liable for that use as a trademark. A liability of the merchant according to § 14 paragraph 7 of the German Trademark Act is only possible if the affiliate committed the trademark infringement as an assignee of the merchant. According to § 8 paragraph 2 of the German Unfair Competition Act, the owner of the company is responsible for infringements of his assignees. It is decisive that the advertising partner (assignee) is included in the internal organisation of the company such that the owner of the company has a constitutive and enforceable influence on his assignee and its activities. The liability of company owner is limited to those activities of the assignee which are part of the corresponding contractual relationship in the respective business area. Only within this scope is the principal’s risk controllable and only within this scope is it justifiable to impose liability under § 14 paragraph 7 of the German Trademark Act on the principal.

Download the full text of the decision I ZR 109/06 “Partner Programme” of the BGH of October 7, 2009 under:

http://www.mueller-bore.de/tl_files/Decisions_BGH/Partner_Programme.pdf

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